Ex Parte Chen et al

Patent Trial and Appeal Board

Oct 18, 2018

14714462 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/714,462 05/18/2015
25908 7590 10/22/2018
NOVOZYMES NORTH AMERICA, INC.
US PATENT DEPARTMENT
77 PERRYS CHAPEL CHURCH ROAD
POBOX576
FRANKLINTON, NC 27525-0576
FIRST NAMED INVENTOR
Chunquan Chen
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
12143-US-CNT[2] 9301
EXAMINER
PRYOR, AL TON NATHANIEL
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
10/22/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKETING@novozymes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUNQUAN CHEN, EWA MARIA CHOLEWA,
JOHN DAVID McIVER, BIRGIT CAROLYN SCHULTZ,
and YANG Y ANG 1
Appeal2018-009186
Application 14/714,462
Technology Center 1600
Before ERIC B. GRIMES, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a plant-
treatment method, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Novozymes BioAg A/S.
Br. 3.
Appeal2018-009186
Application 14/714,462
STATEMENT OF THE CASE
The Specification states that lipo-chitooligosaccharide, or LCO, refers
"in general to a Nod factor which is under control of at least one modulation
gene common to rhizobia, that is bacterial strains which are involved in a
nitrogen fixing symbiotic relationship with a legume." Spec. 5. "LCOs are
understood to comprise derivatives of an oligosaccharide moiety, including
fatty acid condensed at one end thereof." Id.
"The present invention relates to the use of LCOs in initiating early
flowering and budding, increased flowering and budding and earlier fruit
development in non-legume and legume plants, as compared to flowering
and fruit development under conditions without use of LCOs." Id. at 3.
"Administration of LCOs for such purpose may be by leaf or stem
application." Id.
Claims 1---6 and 8-22 are on appeal. Claim 1 is the only independent
claim and reads as follows:
1. A method of initiating early flowering and/or
fruiting in a non-leguminous plant, comprising foliarly applying
to said plant, prior to flowering and/or fruiting of said plant, at
least one lipo-chitooligosaccharide (LCO) to said plant in an
amount effective to initiate early flowering and/or fruiting in
said plant.
The claims stand rejected as follows:
Claims 1-6 and 8-22 under 35 U.S.C. § I03(a) as obvious based on
Smith '465 2 (Ans. 3) and
2 WO 01/26465 Al, published April 19, 2001.
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Application 14/714,462
Claims 1-5 and 8-22 under 35 U.S.C. § 103(a) as obvious based on
Smith '778 3 (Ans. 4).
I
The Examiner has rejected all of the claims on appeal as obvious
based on Smith '465. The Examiner finds that Smith '465 discloses a
method meeting most of the limitations of claim 1 but does not disclose
applying the required amount of LCO. Ans. 3. The Examiner concludes,
however, that "[i]n the absence of unexpected results for the claim
concentration range, it is well within the skill of an artisan in the field to
determine the optimum concentration. One would have been motivated to do
this in order to gain proper and healthy maturation of the plant." Id. at 4.
Appellants argue that "Smith '465 describes the foliar application of
one or more LCOs in 'a quantity which is sufficient to result in a statistically
significant enhancement of the photosynthetic rate, growth and/or yield,"' not
"'in an amount effective to initiate early flowering and/or fruiting."' Br. 7.
Appellants argue, therefore, that "one must show that the amount of LCO
required to enhance photosynthesis is the same as the amount of LCO
required to initiate early flowering and/or fruiting. The Examiner fails to
provide the necessary showing." Id.
Appellants argue that any optimization of the method of Smith '465
would not necessarily produce the recited method because "Smith '465 is
directed to methods of increasing photosynthesis and never mentions the
possibility of using LCO to promote early flowering and/or fruiting." Id. at 8.
3 WO 00/04778, published Feb. 3, 2000.
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Application 14/714,462
We agree with Appellants that the Examiner has not shown that Smith
'465 would have made obvious foliar application of an LCO "in an amount
effective to initiate early flowering and/or fruiting," as required by claim 1.
Smith '465 discloses "methods and compositions to enhance the
photosynthetic rate, and/ or growth, and/ or yield of a plant." Smith '465 at
5 :25-27. "More particularly, the ... invention demonstrates that spraying
LCOs on the leaves of a plant ( e.g. a foliar application) significantly
increases the photosynthetic rate thereof." Id. at 6:20-22.
The Examiner points to the disclosure in Smith '465 of a specific
range of LCO concentrations that can be applied in Smith '465 's method for
increasing photosynthesis and/or yield of plant. Ans. 3. As Appellants point
out (Br. 7-8), however, the claims on appeal require an effective amount of
an LCO, not a particular concentration. The Examiner has not pointed to a
description of specific amounts of an LCO in Smith '465 for use in its
method, and no such description is apparent to us.
The Examiner reasons that "it is well within the skill of an artisan in
the field to determine the optimum concentration." Ans. 4. We agree with
Appellants (Br. 8), however, that "[ s ]uch optimization would not necessarily
produce the recited method because Smith '465 is directed to methods of
increasing photosynthesis," not methods of initiating early flowering or
fruiting. The Examiner has not pointed to evidence showing a certain
amount of an LCO would have both the earlier flowering and/or fruiting
effect recited in claim 1 and the effects that Smith '465 discloses are
achieved by foliar application of LCO: increased photosynthetic rate (Smith
'465 at 6), increased "number of branches, number of leaves and leaf area,"
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Application 14/714,462
increased "number of pod clusters per plant, number of pods and total
number of seeds per plant" and "increases in seed yield" (Smith '465 at 27).
In summary, the Examiner has not shown, by a preponderance of the
evidence, that a method of applying an LCO to plant leaves in the amount
required by claim 1 would have been obvious based on Smith '465. We
therefore reverse the rejection of claims 1---6 and 8-22 under 35 U.S.C.
§ 103(a) based on Smith '465.
II
The Examiner has rejected claims 1-5 and 8-22 as obvious based on
Smith '778. The Examiner finds that Smith '778 discloses "a method for
promoting the germination of seed and/ or seedling emergence and/ or the
growth [ofJ plants" by applying an LCO. Ans. 4. The Examiner finds that
"[ t ]he application of a plant to LCOs [sic] would include contacting the
whole plant (foliage and stem) with the LCOs." Id. The Examiner concludes
that "[s]ince both instant invention and Smith ['778] teach the similar active
step of applying LCOs to the plants, it naturally flows that both inventions
will yield the same result." Id. at 4--5.
Appellants argue that "Smith '778 is directed to the treatment of plant
seeds and plant roots and not to the treatment of plant foliage." Br. 6.
Appellants argue that Smith '778 "neither teaches nor suggests that LCOs
should be applied to the foliage of a plant." Id. Appellants also argue that
"Smith '778 does not claim a method of treating seedlings, as suggested by
the Examiner. To the extent Smith '778 mentions seedlings, it does so in the
context of enhancing 'seedling emergence."' Id. Appellants argue that
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Application 14/714,462
"seedling emergence cannot be enhanced after the plant has already emerged
and formed leaves." Id.
We agree with Appellants that the Examiner has not shown that Smith
'778 would have made obvious "foliarly applying" an LCO to a plant, as
required by claim 1. Smith '778 discloses "methods for enhancing seed
germination and/or seedling emergence and/or growth of plants and/or for
breaking the dormancy thereof comprising a treatment in the vicinity of a
seed or seedling or plant with an effective amount of an agricultural
composition comprising an LCO and an agriculturally suitable carrier."
Smith '778 at 5:22-26 (emphasis added). Smith '778 discloses the same
method, including "a treatment in the vicinity of one of a seed, root or plant"
at 7:18-22 and 7:25-29.
Thus, Smith '778 does not describe treating a seedling or plant itself,
but treatment in the vicinity of a seedling or plant. In response to Appellants'
citations of passages of Smith '778 on this point, the Examiner calls
"attention to Smith '778 claim 1 where it is taught that LCO is applied to
seedlings." Ans. 7. Claim 1 of Smith '778, however, recites "[a]n
agricultural composition for enhancing plant crop seed germination and/or
seedling emergence and/or growth of a plant crop comprising a growth-
promoting amount of at least one lipo chitooligosaccharide (LCO) together
with an agriculturally suitable carrier." Smith '778 at 46:3---6. The claim does
not disclose applying an LCO to seedlings.
We therefore conclude that the Examiner's finding that Smith '778
teaches foliar application is not supported by the evidence, and the Examiner
has not provided a reasoned basis for concluding that this limitation would
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Application 14/714,462
have been obvious based on the disclosure of Smith '778. Thus, we reverse
the rejection of claims 1-5 and 8-22 under 35 U.S.C. § 103(a) based on
Smith '778.
SUMMARY
We reverse both of the rejections on appeal.
REVERSED
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